Ex Parte POBER et al

Patent Trials and Appeals Board

Mar 29, 2019

14902665 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/902,665 01/04/2016
27683 7590 04/02/2019
HA YNES AND BOONE, LLP
IP Section
2323 Victory A venue
Suite 700
Dallas, TX 75219
FIRST NAMED INVENTOR
Kenneth W. POBER
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
7523.1382US01_08217 8935
EXAMINER
HEINCER, LIAM J
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
04/02/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH W. POBER and CATO R. MCDANIEL
Appeal2018-004956
Application 14/902,665
Technology Center 1700
Before MICHAEL P. COLAIANNI, BRIAN R. RANGE,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 9, 10, 13, 16, 18, 19, 21, 23,
31, 32, 36, 39, 46, 47, 50, 51, and 55 of Application 14/902,665 under
35 U.S.C. § 103 and/or for obviousness-type double patenting. Final Act.
(Jul. 18, 2017) 2-10. Appellant1 seeks reversal of these rejections pursuant
to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b ).
For the reasons set forth below, we AFFIRM-IN-PART.
1 The Appellant is the Applicant, Halliburton Energy Services, Inc., which is
also identified as the real party in interest. Appeal Br. 2.
Appeal2018-004956
Application 14/902,665
BACKGROUND
Humus is a brown or black material derived from decomposition of
plant and/or animal substances. Humus may generally be described as "the
organic portion of soil that will not undergo any further decomposition or
degradation, and which comprises complex molecules resembling or
incorporating at least a portion of a humic acid-like structure." Spec. ,r 9.
Humus my comprise brown coal, lignite, subbituminous coal, leonardite,
humic acid, fulvic acid, humin, peat, lignin, and the like, or combinations
thereof. Id. ,r 10.
The Specification concerns a method of alkoxylating a humus
material that includes heating a mixture comprising a humus material, a C3+
cyclic ether, a catalyst and an inert reaction solvent, and recovering a C3+
alkoxylated humus material from the reaction mixture. Id. ,r 3.
Claims 1 and 55 are illustrative of the subject matter on appeal and are
reproduced below:
1. A method of alkoxylating a humus material comprising:
heating a reaction mixture comprising a dehydrated
humus material, a C3+ cyclic ether, a catalyst and an inert
reaction solvent; and
recovering a C3+ alkoxylated humus material from the
reaction mixture;
wherein the dehydrated humus material comprises brown
coal, subbituminous coal, humic acid, a compound
characterized by Structure I, fulvic acid, humin, peat, or
combinations thereof
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Appeal Br. 18 (Claims App.) (reformatted for clarity).
55. A C3+ alkoxylated humus material, wherein the C3+
alkoxylated humus material is a product of a reaction between a
humus material and a C3+ cyclic ether characterized by:
(a) Structure VII:
Structure VII
wherein HM represents the humus material; n is in the range of
from about O to about 3; m is in the range of from about 1 to
about 30; xis in the range of from about Oto about 300, per 100
g of humus material; p is in the range of from about 1 to about
30; y is in the range of from about Oto about 200, per 100 g of
humus material; q is in the range of from about 1 to about 30; z
is in the range of from about O to about 300, per 100 g of humus
material; and x and z cannot both be O at the same time; or
(b) Structure VIII:
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Application 14/902,665
Structure VIII
wherein HM represents the humus material; n is in the range of
from about O to about 3; m 1 is in the range of from about 1 to
about 30; xl is in the range of from about Oto about 300, per
100 g of humus material; p is in the range of from about 1 to
about 30; y is in the range of from about Oto about 200, per 100
g of humus material; q is in the range of from about 1 to about
30; z is in the range of from about O to about 300, per 100 g of
humus material; and x 1 and z cannot both be O at the same
time.
Id. at 31 (Claims App.).
REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1, 9, 10, 13, 16, 18, 19, 21, 23, 31, 32, 47, 50, 51, and 55
are rejected under 35 U.S.C. § 103 as obvious over Pober2 in view
of Baer et al. 3 Final Act. 2--4.
2. Claims 47, 50, 51, and 55 are rejected under 35 U.S.C. § 103 as
obvious over Christian et al. Id. at 5.
3. Claims 1, 9, 10, 21, and 23 are provisionally rejected on the basis
of nonstatutory double patenting over claims 9-11, 15, and 16 of
Application No. 14/893,264. Id. at 6.
2 US 4,578,456, published Mar. 25, 1986 ("Pober").
3 Holger Baer et al., PROPYLENE OXIDE, Ullmann 's Encyclopedia of
Industrial Chemistry I-29 (2012) ("Baer").
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Application 14/902,665
4. Claim 13 is provisionally rejected on the basis of nonstatutory
double patenting over claims 9-11, 15, and 16 of Application No.
14/893,264 and further in view of Gagnon. 4 Id. at 6-7.
5. Claim 16 is provisionally rejected on the basis of nonstatutory
double patenting over claims 9-11, 15, and 16 of Application No.
14/893,264 and further in view ofYang. 5 Id. at 7.
6. Claims 18 and 19 are provisionally rejected on the basis of
nonstatutory double patenting over claims 9-11, 15, and 16 of
Application No. 14/893,264 and further in view of Pober. Id. at 7-
8.
7. Claims 31, 32, 36, 39, 46, 47, 51, and 55 are provisionally rejected
on the basis of nonstatutory double patenting over claims 9-11, 15,
and 16 of Application No. 14/893,264. Id. at 8.
8. Claims 1, 9, 10, 18, 19, 21, and 27 are rejected on the basis of
nonstatutory double patenting over claims 1 and 10 of US Pat. No.
4,578,456 in view of Baer. Id. at 8-9.
9. Claim 31 is rejected on the basis of nonstatutory double patenting
over claim 12 of US Pat. No. 4,578,456 in view of Baer. Id. at 9-
10.
DISCUSSION
Rejection 1. The Examiner rejected claims 1, 9, 10, 13, 16, 18, 19,
21, 23, 31, 32, 47, 50, 51, and 55 as obvious over Pober in view of Baer.
4 Steven D. Gagnon, PROPYLENE OXIDE AND HIGHER 1, 2-EPOXIDE
POLYMERS, Encyclopedia of Polymer Science and Technology 1-38 (2008)
("Gagnon").
5 US 4,456,697, issued June 26, 1984 ("Yang").
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Application 14/902,665
Final Act. 2--4. In support of the rejection, the Examiner determined that
Pober teaches most limitations of the claims at issue. The Examiner found
that Pober teaches a method of alkoxylating lignite (a humus material) by
heating a mixture of lignite, cyclic ether, catalyst, and inert solvent. Id. at 2.
The Examiner determined that the cyclic ether disclosed by Pober does not
teach the "C3+ cyclic ether" limitation of claim 1 because it has only two
carbon atoms. Id. The Examiner further determined, however, that Baer
teaches using a mixture of ethylene oxide and propylene oxide (a C3+ cyclic
ether) to form surface active agents and it would have been obvious to one
of skill in the art to have added propylene oxide to the mixture of Pober "to
balance the water/ oil solubility by increasing the hydrophobicity of the
emulsion breaker of Pober." Id. at 2-3.
Appellant seeks reversal on several bases.
First, Appellant argues that the rejection of claim 1 and the claims
depending therefrom (claims 9, 10, 13, 16, 18, 19, 21, and 23) is in error
because the Examiner has not articulated an adequate reason why a person
of ordinary skill in the art would have combined the teachings of the
references as proposed by the Examiner. Appeal Br. 7-8. Appellant argues
that Baer teaches the use of polyethers (including those derived from
propylene oxide) for surface-active agents ("surfactants") in various contexts
but not "for use in chemically modifying humus materials or the substitution
of ethylene oxide with propylene oxide generally." Id. at 8. Accordingly,
Appellant argues, one of skill in the art would not look to combine the
teachings of Pober and Baer "because of the divergent art areas
encompassed by these references." Id.
This is not persuasive. Pointing out that Baer does not specifically
teach to use surfactants in modifying humus materials does not rebut the
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Examiner's determination that an emulsion breaker is a type of surface
active agent and that Baer teaches that the propylene oxide/ethylene oxide
ratio causes a surfactant to become more hydrophobic. Answer 11.
Appellant further argues that the Examiner does not cite to any
portion of Pober that indicates a need to balance water/oil solubility nor to
"any portion of either Baer or Pober '456 that relates any of the components
of the reaction mixture of Pober '456 to either an emulsion breaker or a
surface active agent." App. Br. 8.
This argument lacks merit. Pober teaches that its reaction product
may be used as an emulsion breaker. The Examiner has found that
alkoxylation of the lignite of Pober with polypropylene would increase the
hydrophobicity of the emulsion breaker of Pober. Final Act. 3. In the
Answer, the Examiner found that an emulsion breaker is a type of surface-
active agent. Answer 11. The Examiner further found that "[t]he desirable
balance of hydrophobic and hydrophilic properties is dependent on the
nature of the emulsion and its components." Id. The Examiner then
determined that one of skill in the art would have looked to Baer's teaching
"that the ratio of ethylene oxide and propylene oxide controls the
hydrophobicity of the compound. Thus, by adding propylene oxide a person
having ordinary skill in the art can control the water and oil solubility of the
compound and tailor the properties for the emulsion that is being treated
with the compound." Id.
Appellant has not sought to rebut such findings. Accordingly,
Appellant has failed to show error in the Examiner's determination that a
person of skill in the art would have had reason to combine the teachings of
Pober and Baer.
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Second, Appellant argues that a person of ordinary skill in the art
would not have had a reasonable expectation of success in combining the
teachings of Pober and Baer because Baer teaches away from the
combination. Appeal Br. 9. Appellant argues that Pober is directed to
lignites with increased water solubility while Baer teaches that the proposed
modification would decrease water solubility (increase hydrophobicity). Id.
An invention is obvious if "a skilled artisan would have been
motivated to combine the teachings of the prior art references to achieve the
claimed invention, and that the skilled artisan would have had a reasonable
expectation of success in doing so." Proctor & Gamble Co. v. Teva Pharm.
USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (quoting Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)).
The reasonable expectation of success requirement refers to the
likelihood of success in combining references to meet the limitations of the
claimed invention. "[F]ailure to consider the appropriate scope of the ...
patent's claimed invention in evaluating the reasonable expectation of
success ... constitutes a legal error." Allergan, Inc. v. Apotex Inc., 754 F.3d
952, 966 (Fed. Cir. 2014). In other words, one must have a motivation to
combine accompanied by a reasonable expectation of achieving what is
claimed.
Here, the Examiner has put forward a rationale for combining the
teachings of Pober and Baer. Appellant argues that such combination would
not have been successful in increasing the hydrophilicity of the lignite of
Pober, but does not address whether such combination would achieve what
is claimed. Rather, Appellant's arguments go to whether there would have
been a reason to combine. Further, Pober teaches some variability in the
solubility of the reaction product. Pober, 3: 17-53.
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To the extent that Appellant argues that one of skill in the art would
not have had reason to combine the teachings of Pober and Baer because
Baer teaches away from such combination, such argument fails. Prior art
may teach away if it "criticize[s], discredit[s], or otherwise discourage[s] the
solution claimed." In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Pober' s teaching regarding water solubility do not rise to such level. Indeed,
Pober indicates some level of variance in solubility. See Pober 3:50-53
("The ethoxylated lignites of the present invention are generally insoluble in
alkanes such as hexane, pentane and the like.") ( emphasis added).
Accordingly, Appellant has not shown reversible error in the
Examiner's determination.
Claims 31, 32, 47, 50, and 51 over Pober in View of Baer
Appellant seeks reversal of the rejection of claims 31, 32, 47, 50, and
51 on the same basis as put forward with regard to claim 1 and its
dependents. Appeal Br. 10. As we have found such arguments not to be
persuasive, we determine that Appellant has not shown error in this regard
concerning the rejection of claims 31, 32, 47, 50, and 51.
Appellant additionally references, but does not articulate, an argument
that the rejection of claims 32, 47, 50, and 51 is in error because the
Examiner has not shown that the cited references teach the "m" and "x"
limitations recited in claim 32 (with claims 47, 50, and 51 depending from
claim 32). Id. As explained below, this argument is persuasive
Claim 55 over Pober in View of Baer
Appellant argues that the rejection of claim 55 over Pober in view of
Baer is in error. Appeal Brief 11-13.
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Application 14/902,665
Claim 55 is to, inter alia, a compound having the following structure
(referred to as Structure VII in the Specification and claims):
where "mis in the range of from about 1 to about 30 [and] xis in the range
of from about O to about 3 00, per 100 g of humus material."
First, Appellant argues that claim 55 is not obvious over Pober in
view of Baer for the same reasons as set forth with regard to claim 1.
Appeal Br. 11. As we have found such arguments not to be persuasive, we
determine that Appellant has not shown error in this regard concerning the
rejection of claim 55.
Second, Appellant argues that the Examiner has not stated an
adequate reason why a person of ordinary skill in the art would have had
reason to have optimize the "m" and "x" values so as to arrive at the claimed
ranges. Id. at 12-13. In regard to the recited values of "m" and "x," the
Examiner finds that
these values would control the hydrophobicity of the lignite and
thus would be considered to be result effective variables. As
such, it would have been obvious to a person having ordinary
skill in the art at the time of invention to have optimized the m
and x values through routine experimentation, and the
motivation to do so would have been, as Baer et al. suggests, to
provide the desired hydrophobicity to the emulsion breaker of
Pober.
Final Act. 4
Thus, the Examiner determines that "m" and "x" are result-effective
variables. "[W]here the general conditions of a claim are disclosed in the
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prior art, it is not inventive to discover the optimum or workable ranges by
routine experimentation." In re Aller, 220 F.2d 454, 456 (CCP A 1955).
"[D]iscovery of an optimum value of a result effective variable in a known
process is ordinarily within the skill of the art." In re Boesch, 617 F.2d 272,
276 (CCPA 1980).
Here, the Examiner finds that it would have been within the skill of
the art to optimize the hydrophobicity of the emulsion breaker of Pober.
Final Act. 4. The Examiner is silent, however, as to whether or not such
optimum hydrophobicity would fall within the claimed ranges for the "m"
and "x" limitations. Nor has the Examiner adequately explained the relative
roles of the "m" and "x" values or how the cited references establish that
"m" and "x" are result-effective. See In re Antoine, 559 F.2d 618 (C.C.P.A.
1977) ( explaining that result-effective variable rationale is improper where
"the parameter optimized was not recognized to be a result-effective
variable .... "). Thus, the general conditions of the claim have not been
shown to be disclosed in the prior art. Accordingly, Appellant has shown
error in the Examiner's determination that optimization of the variables in
question for hydrophobicity would yield the recited values.
Rejection 2. The Examiner rejected claims 47, 50, 51, and 55 as
obvious over Christian. Final Act. 5. Each of these claims requires an
alkoxy group bound to humus material where the "m" and "x" variables
indicate the size of the alkoxy structure in a manner similar to claim 5 5.
Appeal Br. 27-30 (Claims App.). Appellant makes an argument regarding
these claims similar to that it made regarding the rejection of claim 55 over
Pober in view of Baer. Appeal Br. 13-15.
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The Examiner finds that Christian teaches that the hydroxyl number
and ratio of the lignin to the alkoxylating agent are result effective variables.
Final Act. 5. The Examiner relies on the following portion of Christian:
When the polyoxyalkylene ether-polyol is utilized in the
preparation of polyurethane foams, sufficient oxyalkylating
agent should be employed in order to obtain a polyoxyalkylene
ether-polyol which has a hydroxyl number in the range of about
50 to 1000, preferably in the range of 200 to 800.
The weight ratio between the lignin or tannin and the
oxyalkylating agent is generally maintained 3: 1 to 1: 100. The
preferred lignin or tannin to oxyalkylating agent weight ratio is
1: 1 to 1:20.
Christian 3:46-52. This teaching pertains to the preparation of polyurethane
foams. As with regard to the previous rejection of claim 55, the Examiner
has not shown that the optimum values for "m" and "x" for polyurethane
preparation fall within the range of recited values. Nor does the Examiner
adequately explain the relative roles of the "m" and "x" values.
Accordingly, Appellant has shown error with regard to the rejection of
claims 4 7, 50, 51, and 55 as obvious over Christian.
Rejections 3--7. The Examiner provisionally rejected claims 1, 9-10,
13, 16, 18, 19, 21, 23, 31-32, 36, 39, 46-47, 51, and 55 on the ground of
nonstatutory double patenting as being unpatentable over claims 9-11, 15,
and 16 of Application No. 14/893,264 ("the '264 Application") and, for
certain claims, a secondary reference. Final Act. 6-8. Appellant argues that
such provisional rejections are premature and should be held in abeyance
until a notice of allowance is received for either the '264 Application or the
present Application. Appeal Br. 16.
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Review of public records indicates that the '264 Application issued as
U.S. Patent No. 10,144,829 on December 4, 2018. The issued claims appear
to be substantially those pending at the time the Final Rejection in the
present Application was issued (July 18, 2017).
In view of the absence of any substantive argument in the Appeal
Brief responding to the subject rejections, we summarily affirm this
rejection. See Manual of Patent Examining Procedure (MPEP) § 1205.02
(9th ed. Rev. 08.2017, January 2018) ("If a ground of rejection stated by the
examiner is not addressed in the appellant's brief, appellant has waived any
challenge to that ground of rejection and the Board may summarily sustain
it, unless the examiner subsequently withdrew the rejection in the
examiner's answer.").
Rejections 8 and 9. The Examiner rejected claims 1, 9, 10, 18, 19,
21, and 27 on the basis of nonstatutory double patenting over claims 1 and
10 of Pober in view of Baer. Final Act. 8-9. The Examiner further rejected
claim 31 on the basis of nonstatutory double patenting over claim 12 of
Pober in view of Baer. Id. at 9-10.
Appellant argues that the rejection of claims 1, 9-10, 18-19, 21, 27,
and 31 on the ground of nonstatutory double patenting should be reversed,
because the claims at issue require reaction of a "dehydrated humus
material" and the cited claims of Pober do not. Appeal Br. 16-17.
The Specification provides guidance as to how the term "dehydrated
humus material" should be construed.
In an embodiment, the humus materials may be dehydrated
by heating the humus material (for example, in an oven or dryer
such as a rotary dryer) at temperatures of from about 50 °C to
about 125 °C, alternatively from about 55 °C to about 120 °C,
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or alternatively from about 60 °C to about 110 °C. In an
embodiment, the humus material suitable for adding to the
reaction mixture or to any pre-mixed components thereof
comprises a water content of less than about 3.5 wt.%,
alternatively less than about 3 wt.%, alternatively less than
about 2.5 wt.%, or alternatively less than about 2 wt.%, by
weight of the humus material.
Spec. ,r 20 ( emphasis added).
During examination, claim terms must be given their broadest
reasonable construction consistent with the Specification. In re ICON
Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). In view of
the Specification, we construe "dehydrated humus material" to mean humus
material comprising a water content of less than 3.5% weight percent.
Claim 1 of Pober (and claim 10 and 12 by virtue of dependency)
requires that the lignite to be reacted contain "less than about 3.5% by
weight water." Pober, 6:43--44. Accordingly, we determine that the relevant
claims of Pober require "dehydrated humus material."
In view of the foregoing, Appellant has failed to show reversible error
in the Examiner's determination that claims 1, 9, 10, 18, 19, 21, and 27
should be rejected on the basis of nonstatutory double patenting over claims
1 and 10 of Pober in view of Baer and that claim 31 shold be rejected on the
basis of nonstatutory double patenting over claim 12 of Pober in view of
Baer.
CONCLUSION
The rejection of claims 1, 9, 10, 13, 16, 18, 19, 21, 23, and 31 as
obvious over Pober in view of Baer is affirmed. The rejection of claims 32,
47, 50, 51, and 55 over Pober in view of Baer is reversed. The rejection of
claims 47, 50, 51, and 55 as obvious over Christian is reversed. The
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rejection of claims 1, 9, 10, 13, 16, 18, 19, 21, 23, 31, 32, 36, 39, 46, 47, 51,
and 55 on the ground of nonstatutory double patenting over claims 9-11, 15,
and 16 of Application No. 14/893,264 (and certain secondary references) is
affirmed. The rejection of claims 1, 9, 10, 18, 19, 21, and 27 on the basis of
nonstatutory double patenting over claims 1 and 10 of Pober in view of Baer
is affirmed. The rejection of claim 31 on the basis of nonstatutory double
patenting over claim 12 of Pober in view of Baer is affirmed.
Thus, at least one rejection is affirmed with respect to every pending
claim except for claim 5 0.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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